Appeal No. 1996-1811
Application No. 08/169,968
preparation. The only place we find the suggested combination of all three compounds
into a single clot accelerant reagent is in appellant’s specification. Therefore, we find that
the examiner has relied on impermissible hindsight in making her determination of
obviousness. In re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1784 (Fed. Cir. 1992)
(“It is impermissible to engage in hindsight reconstruction of the claimed invention, using
the applicant’s structure as a template and selecting elements from references to fill the
gaps”). Accordingly, the rejection of claims 1-24 under 35 U.S.C.
§ 103 is reversed. Having concluded that the examiner has not established a prima facie
case of obviousness, we need not consider the appellant's rebuttal evidence (see brief,
pages 2, 4 and 6, referring to “the test results submitted by the applicant in Paper No.
4
16.”) In re Fine, 837 F.2d 1071, 1076, 5 USPQ2d 1596, 1600 (Fed. Cir. 1988).
CONCLUSION
To summarize, the decision of the examiner to reject claims 1-24 under 35 U.S.C. §
103 as being unpatentable over JP 58-1460 in combination with Lewis and JP 61-53567
is reversed.
4Appellant’s reference to Paper No. 16 is apparently an inadvertent typographical error. Paper No.
16 (filed December 1, 1994) is an extension of time request. The amendment concurrently filed on
December 1, 1994 (Paper No. 17) with the extension of time request is evidently intended.
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